Baden Sports, Inc. v. Molten
| Decision Date | 28 January 2008 |
| Docket Number | No. C06-210MJP.,C06-210MJP. |
| Citation | 541 F.Supp.2d 1151 |
| Parties | BADEN SPORTS, INC., Plaintiff, v. Kabushiki Kaisha MOLTEN (DBA Molten Corporation) and Molten U.S.A., Inc., Defendants. |
| Court | U.S. District Court — Western District of Washington |
Bruce A. Kaser, Vantage Law, Issaquah, WA, James L. Phillips, Aubrey Anne Seffernick, Miller Nash LLP, Seattle, WA, for Plaintiff.
Aaron Wainscoat, Arthur S Beeman, Margaret Elizabeth Day, Nickolas Bohl, Robert Buergi, Stellman Keehnel, DLA Piper U.S. LLP, East Palo Alto, CA, Gi-In An, Edwards Angell Palmer & Dodge LLP, Washington, DC, for Defendants.
This matter comes before the Court on Defendants' motion for judgment as a matter of law (Dkt. No. 359) and motion for a new trial (Dkt. No. 358). Plaintiff opposes both motions. (Dkt. Nos. 372 & 373.) Having considered the motions and responses, Defendants' replies (Dkt. Nos. 375 & 374), all documents submitted in support thereof and the record herein, and having heard oral argument on the motions, the Court DENIES both motions.
Defendants Kabushiki Kaisha Molten and Molten U.S.A. (hereinafter "Molten") and Plaintiff Baden Sports are competitors in the sports ball business. In the 1990's, Baden developed and patented a new game-quality basketball that is "cushioned" or "padded." (Third Amended Complaint [hereinafter Compl.] ¶ 10.) Believing that Molten had started selling "dual cushion technology" basketballs in the United States that infringed on Baden's patent, Baden sued Molten for patent infringement. Baden also sued Molten for violations of the Lanham Act, 15 U.S.C. § 1125, alleging that Molten falsely advertised its infringing basketball as an "innovative technology that is proprietary to Molten" and imported its balls into the United States without marking the country of origin. (Compl. ¶ 46). As the litigation progressed, Molten changed the design of its "dual cushion technology" basketball that it sold in the United States.
This case was tried before a jury between August 6 and August 14, 2007. Before trial began, the Court granted summary judgment in favor of Defendants on Plaintiffs country of origin claim and granted summary judgment in favor of Plaintiff on Plaintiffs claim that Defendants' "old" basketballs infringed its '835 patent. (Dkt. Nos. 233 & 236.) The Court also limited Baden's Lanham Act claim by ruling that Baden could only bring such a claim on Molten's advertising that its basketballs were "innovative" and not on Molten's advertising that its basketballs were "exclusive" or "proprietary." (Dkt. No. 233.)
The Court made several important discovery rulings before and during trial that affected Molten's ability to present its defense. Before trial, the Court granted Baden's motion to exclude all Molten Corporation witnesses, including Hidesuki Kiriki, who had planned to testify regarding the construction of the "new" Molten basketball and Molten's JP '253 patent, on which the "new" design is based. (Dkt. No. 235.) The Court excluded Mr. Kiriki and all other Molten Corp. witnesses because Molten inexcusably delayed disclosing its intention to call Mr. Kiriki until after discovery had closed and because Molten's counsel had informed Baden that no Molten Corp. witnesses would testify at trial. (Id.) The Court also excluded Craig Barker, who had planned to testify regarding the obviousness of Baden's '835 patent, because Molten did not identify Mr. Barker as a witness until three months after the close of discovery. (Dkt. No. 283; Tr. 698-702.) During trial, the Court granted Baden's motion to exclude English translations of Molten's Japanese prior art patents because Molten did not disclose, until after trial had already commenced, the translator of those documents and because Molten did not offer a witness to lay the foundation for the accuracy of the translations. (Tr. 985-88.) Molten therefore had no evidence to present to the jury on the issue of invalidity and the Court directed a verdict in favor of Plaintiff on Defendants' claim that Plaintiffs patent was invalid. (Tr. 993.) Molten's dilatoriness in identifying witnesses and preparing for trial thus resulted in key witnesses and evidence being excluded, and a directed verdict on the issue of invalidity in favor of Baden.
Several questions were presented to the jury: (1) whether Baden had proved that Molten had falsely advertised its product as "innovative"; (2) whether any such false advertising was intentional; (3) whether Baden had proved that Molten had continued to offer for sale in the United States its infringing basketball; and (4) whether Molten's patent infringement was willful. (Dkt. No. 313.) The jury was also asked to decide what amount to award as damages for the Lanham Act violation and/or a reasonable royalty for the Patent Act violation. (Id.) On August 16, the jury rendered a verdict in favor of Plaintiff on all claims, concluding that Molten had intentionally falsely advertised, continued to offer for sale infringing basketballs, and willfully infringed Baden's '835 patent. The jury awarded Baden $38,031.00 as a reasonable royalty for patent infringement and $8,054,579.00 as damages for Molten's intentional false advertising. (Dkt. No. 321.)
After trial, the Court granted in part Baden's motion for a final judgment and permanent injunction. The Court enjoined Molten from false advertising within the United States and false advertising directed at United States consumers. (Dkt. No. 348.) The Court granted Baden's motion for prejudgment interest, but denied Baden's motion for enhanced patent damages and attorneys' fees. (Id.)
After trial, Molten retained new counsel and terminated all but one of its trial attorneys. With its new counsel, Molten now moves for judgment as a matter of law and for a new trial.
Molten moves for judgment as a matter of law ("JMOL") under Federal Rule 50(b). The parties dispute whether Molten properly preserved all of the issues it raises in its motion and whether the jury's verdict is supported by substantial evidence.
Federal Rule 50 provides in relevant part:
(a) Judgment as a Matter of Law
(1) In General. If a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue, the court may:
(A) resolve the issue against the party; and
(B) grant a motion for judgment as a matter of law against the party on a claim or defense that, under the controlling law, can be maintained or defeated only with a favorable finding on that issue.
(2) Motion. A motion for judgment as a matter of law may be made at any time before the case is submitted to the jury. The motion must specify the judgment sought and the law and facts that entitle the movant to the judgment,
(b) Renewing the Motion After Trial; Alternative Motion for a New Trial.
If the court does not grant a motion for judgment as a matter of law made under Rule 50(a), the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion. No later than 10 days after the entry of judgment — or if the motion addresses a jury issue not decided by a verdict, no later than 10 days after the jury was discharged — the movant may file a renewed motion for judgment as a matter of law and may include an alternative or joint request for a new trial under Rule 59. In ruling on the renewed motion, the court may:
(1) allow judgment on the verdict, if the jury returned a verdict;
(2) order a new trial; or
(3) direct the entry of judgment as a matter of law.
Fed.R.Civ.P. 50(a), (b).1 Rule 50 therefore prescribes a two-step process for preserving challenges to the sufficiency of the evidence supporting a verdict: first, a party must file a pre-verdict motion under Rule 50(a) (); second, the party must file a post-verdict motion for judgment as a matter of law. See Nitco Holding Corp. v Boujikian, 491 F.3d 1086, 1089 (9th Cir. 2007). "Rule 50(b) restricts the grounds that may be asserted in post-verdict motions to those asserted in pre-verdict motions." See 9 James Wm. Moore, Moore's Federal Practice-Civil § 50.05[5][b][i] (2007). Thus, a Rule 50(a) motion is a prerequisite to a Rule 50(b) motion; to move for judgment as a matter of law on a particular issue, the movant must have previously raised that specific issue in the pre-verdict motion. Id.; see also Gilchrist v. Jim Slemons Imports, Inc., 803 F.2d 1488, 1493 (9th Cir.1986).
The chronology of the parties' Rule 50(a) motions is as follows:
(1) After Plaintiffs opening statement, Molten moved "under Rule 50 based on the opening statement." (Tr. 192.) Molten argued that Baden's false advertising claim — that Molten falsely advertised that its basketball was "innovative" — was really a "reverse passing off" claim relating to the inventorship of Molten's "dual cushion technology," a claim barred under the Court's summary judgment order and the Supreme Court's decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003). (Id.) The Court denied the motion, stating that it is "rare" that this kind of motion should be granted, and that as long as the facts presented in the opening statement could support Plaintiff's claim, the motion should be denied. (Tr. 198.)
(2) After the parties presented all their evidence, the Court invited motions for directed verdict. (Tr. 990.) Baden moved on two issues — whether Baden's patent was invalid and whether Molten continued to offer to sell infringing dual cushion technology basketballs even after it changed its basketball design.
(3) Before the Court could rule on Baden's motion, Molten made...
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Baden Sports, Inc. v. Molten Usa, Inc.
...relating to a jury award of $8,054,579 for false advertising under Section 43 of the Lanham Act. See Baden Sports, Inc. v. Kabushiki Kaisha Molten, 541 F.Supp.2d 1151 (W.D.Wash.2008). Baden Sports, Inc. ("Baden") cross-appeals from the court's decision denying Baden's motion for a modified ......